JOHN PAOLUCCIO et al.

Patent Trials and Appeals BoardJun 30, 2021

2020006686 (P.T.A.B. Jun. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/353,852 03/14/2019 JOHN J PAOLUCCIO PAOL33NPCIPC 9347 26833 7590 06/30/2021 ROBERT S. SMITH 1131-0 TOLLAND TURNPIKE SUITE 306 MANCHESTER, CT 06042 EXAMINER HUTCHENS, CHRISTOPHER D. ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 06/30/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): smith@i-p-counsel.com smithlaw3@gmail.com smithlaw@cox.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN J. PAOLUCCIO and JOHN A. PAOLUCCIO Appeal 2020-006686 Application 16/353,852 Technology Center 3600 Before MICHAEL J. FITZPATRICK, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1–22, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellant’s claimed invention relates to a method of controlling mosquito eggs, mosquito larvae, and mosquito pupae with ultra-violet light 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as John A. Paoluccio, John J. Paoluccio, and Inventive Resources Inc. Appeal Br. 3. Appeal 2020-006686 Application 16/353,852 2 rays in the C range (UV-C). Spec. ¶¶ 8, 32. Claim 1, reproduced below, is the sole independent claim. 1. A method for controlling mosquito eggs, mosquito larvae, and mosquito pupae which comprises: identifying a potential location likely to be chosen by a female mosquito for deposit of mosquito eggs; providing a UV-C germicidal light source; supporting the UV-C germicidal light source in spaced relation to the potential location; providing a source of electric power sufficient for operation of the UV-C germicidal light source; exposing at least one organism selected from the group consisting of mosquito eggs, mosquito larvae, and mosquito pupae to the UV-C germicidal light source. Appeal Br. 48 (Claims App.) (emphasis added). EXAMINER’S REJECTIONS Claims 1–3, 5, 8, 9, 11, 14, 15, 18, 21, and 22 stand rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Ervin (US 2017/0203986 A1, pub. July 20, 2017). Final Act. 2–3. Claims 4 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ervin and Williams (US 2005/0279016 A1, pub. Dec. 22, 2005). Final Act. 4. Claims 6, 7, 12, 13, 19, and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ervin. Final Act. 4–5. Claims 10 and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ervin, Williams, and Huey (US 5,594,422, iss. Jan. 14, 1997). Final Act. 5. Appeal 2020-006686 Application 16/353,852 3 ANALYSIS A. Anticipation (Claims 1–3, 5, 8, 9, 11, 14, 15, 18, 21, and 22) In rejecting claim 1 as anticipated by Ervin, the Examiner finds that the “contaminated water” disclosed by Ervin satisfies the claimed step of “identifying a potential location likely to be chosen by a female mosquito for deposit of mosquito eggs.” Final Act. 4 (citing Ervin ¶ 74). Appellant counters that Ervin fails to meet the “identifying” step of claim 1 because one skilled in the art would have no reasonable basis to believe that contaminated water within Ervin’s water treatment system amounts to a likely place to be chosen by a female mosquito for deposit of mosquito eggs. See Appeal Br. 22. According to Appellant, the Examiner’s rejection is fraught with “ambiguity” regarding exactly how Ervin meets the “identifying” step. Id. at 28, 31. We agree with Appellant. The Examiner clearly falls short in satisfying the Office’s burden of proving a prima facie case of anticipation. As a matter of law, the Examiner must construe the claimed step of “identifying a potential location likely to be chosen by a female mosquito for deposit of mosquito eggs” consistent with Appellant’s Specification. Here, the Examiner fails to do so. In particular, the Examiner overlooks the Specification’s repeated discussion of the claimed “potential location” as “where mosquitos flourish,” “where they congregate,” or their “common ideal habitat.” See, e.g., Spec. ¶¶ 6, 63, 80–82. Those disclosures support that the claimed step of “identifying a potential location” should be construed as necessarily involving a mosquito’s natural breeding habitat, i.e., at the source of a likely contamination. Appeal 2020-006686 Application 16/353,852 4 But, apart from pointing to Ervin’s disclosure of “contaminated water,” the Examiner fails to explain how the random influent found in a water treatment system, such as Ervin’s, equates to a mosquito’s natural breeding habitat. Indeed, the influent in a water treatment plant originates from any number of sources where possible contamination from mosquitos is entirely unknown. Lacking meaningful explanation from the Examiner, we are unpersuaded that Ervin’s influent, which consists of water piped into the treatment system regardless of its source, satisfies the claimed step of “identifying a potential location likely to be chosen by a female mosquito for deposit of mosquito eggs.” As such, we do not sustain the Examiner’s anticipation rejection of claim 1.2 Nor do we sustain the anticipation rejection of claims 2, 3, 5, 8, 9, 11, 14, 15, 18, 21, and 22, which depend from claim 1. B. Obviousness (Claims 4, 6, 7, 10, 12, 13, 16, 17, 19, and 20) In rejecting the remaining pending claims on grounds of obviousness, the Examiner again turns to Ervin, either alone or in combination with Williams or Huey. See Final Act. 4–5. But in rejecting those claims, the 2 Our reversal of the Examiner’s anticipation rejection should in no way be construed as an indication that the subject matter of claim 1 would not have been obvious. As the Board’s function is primarily one of review, we do not decide today whether Ervin, which clearly teaches the use of UV-C light for removing and/or reducing mosquito contaminants as part of a water treatment process, might, alone or in combination with other prior art of record, render obvious the claimed method of using UV-C light to treat water at the source of contamination. But because the Examiner fails to address the knowledge and level of skill in the art, we cannot determine whether one skilled in the art would have found Ervin’s teachings as equally applicable to other environments. Appeal 2020-006686 Application 16/353,852 5 Examiner does not remedy Ervin’s failure to teach or suggest the claimed “identifying a potential location” step. See id. Thus, for the same reasons discussed above with respect to claim 1, we do not sustain the Examiner’s obviousness rejections of claims 4, 6, 7, 10, 12, 13, 16, 17, 19, and 20. CONCLUSION Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–3, 5, 8, 9, 11, 14, 15, 18, 21, 22 102(a)(2) Ervin 1–3, 5, 8, 9, 11, 14, 15, 18, 21, 22 4, 17 103 Ervin, Williams 4, 17 6, 7, 12, 13, 19, 20 103 Ervin 6, 7, 12, 13, 19, 20 10, 16 103 Ervin, Williams, Huey 10, 16 Overall Outcome 1–22 REVERSED